IN THIS VIDEO WE DISCUSS, WHAT ARE INTERNATIONAL TRADEMARK RIGHTS? INTERNATIONAL TRADEMARK LAW | ©™️ INTELLECTUAL PROPERTY
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INTERNATIONAL TRADEMARKS

Trademark protection is country-specific. That is, foreign trademark protection is obtained primarily through actual registration in each particular country. This can be an expensive process. Fortunately, there are international treaties that facilitate the process.

A. PARIS CONVENTION

The Paris Convention for the Protection of Industrial Property allows you to file in signatory countries within six (6) months of filing in the United States. The Paris Convention gives you a six (6) month period to file in an international country. The Paris Convention has been adopted by 175 countries, which are referred to as the Paris Union. The main principle of the Paris Convention is that nationals of any Paris Union country are afforded the same intellectual property protection and enforcement that the national law of any country of the Union grants its own citizens.

B. MADRID PROTOCOL

Another treaty is the Madrid Protocol, in which U.S. applicants can get protection in multiple countries by simply filing one application. The Madrid Protocol allows applicants to file in a single country and the filing costs will be less in filing in the other approximately 60 signatory countries. You also get the benefit of the Paris Convention through the Madrid Protocol. The rule of thumb is: if you want to register your mark in three (3) or more countries, it is advisable to file under the Madrid Protocol. An International Application under the Madrid Protocol is filed with the USPTO which is then transmitted to the United Nationís World Intellectual Property Organization (WIPO), which will then forward the International Application to each designated country for evaluation. Significant costs are saved because payment of agents and Attorneyís fees abroad may be eliminated. However, if the International Application is rejected by any of the designated countries, a foreign trademark Attorney will need to be retained in order to file a response. A rejection in one designated country will not affect the other designated countries. An International Registration under the Madrid Protocol lasts ten (10) years and can be renewed for an additional ten (10) years.

C. EUROPEAN UNIONíS COMMUNITY TRADEMARK

The Community Trade Mark (CTM) registration process through the European Union allows you to file in all EU territories with one application for a single fee.

D. DEFENSIVE REGISTRATION IN CHINA

In order to protect against trademark piracy, a mark owner should file a defensive registration. Many trademark pirates will take United States trademarks and register them in China. As a defensive measure, the trademark owner should file a trademark application in China so that their goods are not blocked at customs if selling in China.

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